Appeal 2007-2225
Application 10/054,809
presume that a new ground of rejection has not been entered against those
claims.
Appellants in the Reply Brief (2) argue that the relevant portion of
page 127 of the Specification distinguishes storage media (presently
claimed) as magnetic or optical media (such as disk, RAM, or ROM) from
transmission media or signals such as electrical, electromagnetic, or digital
signals conveyed via a communication medium.
We agree with Appellants that the referenced portion of the
Specification does not support the Examiner’s position that the present
claims are intended to encompass a form of energy. Because the basis for
the rejection of the claims is in error, we do not sustain the rejection of
claims 110 and 111 under 35 U.S.C. § 101 as being directed to nonstatutory
subject matter.
Rejections over the prior art
The instant application was filed in the USPTO on January 22, 2002.
The Examiner’s rejections over the prior art rely on Teodosiu, a U.S. utility
patent application filed on September 13, 2001 and published May 23, 2002.
The application thus may be a reference under 35 U.S.C. § 102(e)(1), as the
(Teodosiu) application for patent was filed in September 2001, apparently
“before the invention by the applicant for patent.” The date of the instant
invention, if considered to be the date of filing of the application in the
USPTO, is later than the Teodosiu application filing.
However, according to Appellants, the instant application claims
benefit under 35 U.S.C. § 119(e) for the filing of four provisional
applications, ranging in date from January 22, 2001 to July 31, 2001. All the
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